Do You Qualify As A Micro-Entity?

By Debby Winters

The America Invents Act provides for a new entity for independent inventors called a “micro-entity.” A micro-entity pays certain fees at a 75% reduction of the normal amount.  To qualify as a micro-entity, certain conditions must be met. Below is a list of those conditions.

For unassigned applications, the entity must not include any inventors that have been named on 5 or more patent applications, not including provisional or non-US applications.  Thus, “micro-entities” are newer inventors.  The application must not be licensed or the inventors must not be legally obligated to license or assign the application.  Each inventor must have an income of less than 3 times the average gross income reported by the Department of Labor for the previous calendar year.

For assigned applications, the inquiry is similar.  None of the inventors must be named on 5 or more patent applications.  The application can only be assigned to an entity with 5 or fewer employees.  And the assignee must have an income of less than 3 times the average gross income for the previous calendar year.

Finally, for applications where the applicant receives the majority of his income from an institution of higher learning or where the applicant is under an obligation to assign or license the application to an institution of higher learning, micro-entity status applies.  This is regardless of the income level or number of applications previously filed by the applicant.

Thus, micro-entities will be a very small group of applicants, but it can result in significant savings on PTO fees. If you are in doubt, see your patent attorney for a determination.

Can you re-file a provisional patent application?

By Debby Winters

I quite often get questions about what are the options if your provisional patent application is going to expire (remember they only last for 12 months) and you are not ready to commit to a full non-provisional patent application.

The first question is always “Can I re-file a provisional patent application?” and the answer to this is that it depends.  It depends on if you have had a public disclosure or offer for sale.  Patent attorneys call this a “102 date” since this triggers certain patent laws and you may have done something to block yourself from getting  a patent.  For example, posting a video on Youtube showing your invention on March 1, 2012 may get a “102 date” of March 1, 2012 because that is the date the public first had access to see your invention.

If your provisional patent application is about to expire you have several options:

(1) If your idea is still secret and has not been published or offered for sale (i.e. no “102 date”) then you should have the option to re-file another provisional patent application.  In theory you could do this over and over again as long as your invention stays secret.  Of course this is very risky now that the United States is a “first to file” country because someone else may invent the same or similar thing and if they get their real patent filed before you, you may lose out on your chance to patent it.

(2) If your idea is no longer secret since you may have told people about it, published it, or offered it for sale (i.e. you created a “102 date”) you may be able to still file a provisional patent application as long as it’s within 1-year from that 102 date.

(3) If your 102 date was more than a year ago, you may be out of luck and the best you could do is try to come up with an improvement or tweak to your invention and file a regular utility patent application on that.

(4) You can file a full non-provisional patent application within 12 months from the date you filed your provisional patent application.  Sometimes if people have a 102 date after they filed their provisional this is the best option for them.

(5) You can do nothing and let your provisional patent application expire.  A lot of great products do well in the market without any patent protection.